11/21/2013

Unwired Planet v. Google: Court Order Increases the Number of Prior Art References Available to Defendant


Category: Civil Procedure
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleUnwired Planet LLC v. Google Inc., Case No. 3:12-CV-0504-MMD (VPC) (D. Nev. Oct. 10, 2013).
Issues
[1] "[Google argues that] the order allows Unwired to assert more patent claims than even Unwired asked to assert [...]."
Unwired Planet LLC at *4 (citation removed, text added).
[2] "With respect to reductions of prior art references, Google’s view was that limitations on its prior art defenses 'has the effect of depriving Google of viable defenses to Unwired Planet’s claims.'" Order at *2. "Google [suggests] that the court committed clear error or that the order is manifestly unjust."
Id. at *3, 4 (text added).
Holdings
[1] "[I]n attempting to navigate through the parties’ briefs and the Federal Circuit Advisory Council’s proposed order, this court erred and increased the number of Unwired’s asserted claims beyond what the parties requested and beyond what is reasonable and manageable for trial."
Id. at *6.
[2] "Google has made a persuasive argument that if the court’s order stands, and Google is limited to 40 references to respond to 40 claims just after claim construction, and to 20 references to respond to 18 claims to be asserted before trial, this will have the effect of limiting Google to one reference per claim."
Id. at *7.


Procedural History
[Asserted Claims] "Unwired originally identified 124 claims from ten patents as its asserted claims"
Unwired Planet LLC at *1.
"Reduction of Unwired’s Asserted Claims [Court Order After Claim Construction] 40 claims total (15 per patent) [Court Order Before Trial] 18 claims total (8 per patent)"
Id. at *2 (text, emphasis added).
"Reduction of Google's Prior Art References [Court Order After Claim Construction] 12 references per patent and no more than 40 claims asserted [Court Order Before Trial] 4 references per patent and no more than 20 references"
Id. at *3 (text, emphasis added).
"[Google moves] for clarification and reconsideration of order re: reduction of claims and prior art references (#150). [Unwired] opposed (#166) and Google replied (#176)."
Id. at *1 (text added).

 

Legal Reasoning (Cooke)
Background
Legal Standard"Rule 54(b) of the Federal Rules of Civil Procedure allows the court to revise any order adjudicating fewer than all of the claims in an action at any time before final judgment. 'Reconsideration is appropriate if the district court (1) is presented with newly discovered evidence, (2) committed clear error or the initial decision was manifestly unjust, or (3) there is an intervening change in controlling law.' However, '[a] motion for reconsideration is not an avenue to re-litigate the same issues and arguments upon which the court already has ruled.'"
Unwired Planet LLC at *3 (citations removed).
Google's Arguments"(1) the order allows Unwired to assert more patent claims than even Unwired asked to assert; (2) the order limits Google to fewer prior art references than even Unwired asked Google to be limited to; (3) the order allows Google an average of only one prior art reference per patent claim, which is far fewer than Google contends it will need [including] that proof of obviousness requires a combination of prior art references."
Id. at *4 (citation removed, text added).
Reduction of Unwired's Asserted Claims
Error in Permitting More Claims than agreed upon by Parties
"Unwired next contends that [...] it should not have to make further reductions 'simply for the sake of making reductions.'"
Unwired Planet LLC at *4 (citation removed, text removed).
"The court allowed Unwired to assert 40, which is more than either party considered reasonable. The parties both agreed that prior to trial, Unwired’s asserted claims should be reduced to 15. However, the court allowed Unwired a total of 18 claims to be asserted at trial. Thus, [...] this court erred and increased the number of Unwired’s asserted claims beyond what the parties requested and beyond what is reasonable and manageable for trial."
Id. at 6 (text removed).
Prior Art Defenses and Prior Art References
Unreasonable to Limit Number of Patents Asserted to one per claim
"The focus of Unwired’s opposition is that the court’s order is neither clear error nor manifestly unjust."
Unwired Planet LLC at *4.
"Unwired [asserts that] Google has waived [any new] arguments. [...] [T]he court concludes that Google recognized the difficulty the court had in understanding the parties’ positions, as reflected in its order, and provided much needed basic information about patent law to assist the court in clarifying or modifying its order."
Id. (text added, citations removed).
"Google has made a persuasive argument that if the court’s order stands, and Google is limited to 40 references to respond to 40 claims just after claim construction, and to 20 references to respond to 18 claims to be asserted before trial, this will have the effect of limiting Google to one reference per claim."
Id. at *7.
"Each claim is supposed to be patentably distinct, and it is not unreasonable to expect that each claim will require proof of separate and distinct prior art to prove that it is obvious. It is true that multiple claims within the same patent will sometimes rise or fall together [...] As between claims of different patents, however, there would be no reason to expect that the relevant prior art will overlap [...] Also, [...] obviousness proof usually requires combinations [...] and a limit of one reference per claim will prevent Google from even the opportunity to present such combinations."
Id. at *7, 8 (emphasis removed, quoting Google's motion #150).
Conclusion
"[T]he motion of Google [...] (#150) is GRANTED." Unwired Planet LLC at *8.
"1. Unwired will reduce its asserted claims to 30 after the Markman hearing and to 15 before trial; 2. After issuance of the Markman order, Google may rely on 15 prior art
references per independent claim and 18 references per dependent claim; 3. Prior to trial, Google may rely on 5 references per independent claim and 8 references per dependent claim."
Id. 

 

Contributor Note
The Court's citation at *3 of #150 at 7:18-26 states "no more than 40 claims asserted." Yet, *7 states that Google argues that it would have been "limited to 40 references to respond to 40 claims just after claim construction."  

 

Image Attribution Statement: Lake Erie Arboretum at Frontier Park, "Labyrinth at Leaf," available as a public domain image, http://commons.wikimedia.org/wiki/File:LabyrinthAtLEAF.JPG (last visited Nov. 21, 2013).  

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